1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication

1505.01(a) Requirement for Representation, and Form and Timing of Amendments

Requirement for Representation of Non-U.S.-domiciled Applicants. An applicant’s domicile will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §§2.11(a), 11.1, 11.14(e); TMEP §601. An applicant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R §2.11(a); TMEP §601. See TMEP §601 regarding determining domicile and §602 regarding persons authorized to practice before the USPTO in trademark matters.

If the USPTO receives a post-publication amendment filed by an unrepresented foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will follow the procedures in TMEP §601.01(a) and grant the applicant 60 days to appoint a qualified U.S. attorney. If the applicant does not appoint a qualified U.S. attorney within the time allowed, the amendment will not be reviewed.

Form of amendments. All amendments filed after publication must be submitted in writing and signed by a proper party. 37 C.F.R. §2.193(e)(2). Unless a notice of opposition has been filed, the USPTO generally requires that amendments filed after publication but before issuance of a registration or notice of allowance be filed using the TEAS Post-Publication Amendment form at https://teas.uspto.gov/.

Requests to correct minor typographical errors entered by the USPTO must also be submitted in writing and signed by a proper party using the same TEAS Post-Publication Amendment form. See 37 C.F.R. §2.193(e)(2). Inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a pending post-publication amendment, can be made by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 or emailing TrademarkAsistanceCenter@uspto.gov.

Any amendment filed during the pendency of an inter partes opposition proceeding must be filed directly with the Board via ESTTA. See TBMP §110.01; TMEP §1505.01(f).

Timing of amendments. The USPTO cannot process any amendment filed during the time periods in which the mark cannot be withdrawn from publication in the Trademark Official Gazette or from issuance of a registration. If a request for amendment relates to a mark that cannot be withdrawn from publication, it will be processed in accordance with the procedures set forth in TMEP §1505.01(b) through §1505.02(g). If a request for amendment relates to a mark that cannot be withdrawn from issuance of a registration, or that has already registered, the applicant will be instructed to resubmit its request to the Post Registration Section as a request to amend or correct the registration under §7 of the Trademark Act. 15 U.S.C. §1057; 37 C.F.R. §§2.6, 2.173(a), 2.174, 2.175.

See TMEP §1107 and §1107.01 regarding amendments to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use, and TMEP §§1609-1609.12 regarding amendment of a registration under §7(e) of the Trademark Act.

1505.01(b) Processing Amendments to §1(a), §44, and §66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued

Amendments filed after publication will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the mark does not register before the amendment has been considered. The paralegal specialists will consult with an attorney, if necessary.

1505.01(b)(i) Acceptable Amendments

If an amendment is acceptable and does not require republication of the mark, the paralegal specialist will enter the amendment and the mark will continue on to the scheduled issue date. See TMEP §1505.03(b) for examples of amendments that do not require republication.

If the amendment is acceptable and republication is required, the paralegal specialist must telephone or email the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File in the record that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.

1505.01(b)(ii) Unacceptable Amendments

If the paralegal specialist determines that an amendment is unacceptable, the paralegal specialist must provide written notification to the applicant, explaining why the amendment is unacceptable and advising the applicant that: (1) the application will be returned to processing without entry of the requested amendment; and (2) applicant’s only recourse is to file a TEAS Petition to Director requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment. 37 C.F.R. §§2.84, 2.146. Any petition to the Director must be filed within six weeks of the publication date to ensure that it is timely processed. Thereafter, any request for amendment must be filed pursuant to §7 of the Trademark Act, 15 U.S.C. §1057.

1505.01(c) Processing Amendments to §1(b) Applications in Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued

Amendments filed after publication and before issuance of a notice of allowance will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the notice of allowance does not issue before the amendment has been considered.

1505.01(c)(i) Acceptable Amendments

If the amendment is acceptable and republication is not required, the paralegal specialist will enter the amendment and schedule the mark for issuance of a notice of allowance. See TMEP §1505.03(b) for examples of amendments that do not require republication.

If the amendment is acceptable and republication is required, a paralegal specialist must telephone or email the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File in the record indicating that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.

1505.01(c)(ii) Unacceptable Amendments

If the paralegal specialist determines that the amendment is unacceptable, the paralegal specialist must provide written notification to the applicant explaining why the amendment is unacceptable and advising the applicant that: (1) the request to amend the application may be resubmitted with the statement of use; or (2) the applicant may file a TEAS Petition to Director under 37 C.F.R. §2.84 and §2.146 requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment.

See TMEP §§1107-1107.01 regarding amendments after issuance of the notice of allowance but before the filing of the statement of use.

1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use

Generally, the only amendments that will be entered in a §1(b) application between the issuance of a notice of allowance and the submission of a statement of use are those outlined in TMEP §1107. See 37 C.F.R. §2.77(a). All other amendments may be entered during this period only with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b). A petition is not required for amendments submitted as part of the statement of use. See TMEP §§1107–1107.01 for further information about amendments filed between the issuance of a notice of allowance and the submission of a statement of use, §1109.08 regarding examination of amendments submitted with a statement of use, and Chapter 1700 regarding petitions to the Director.

1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted

An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §1505.01(b)-(d). See TBMP §212.01. The Director retains jurisdiction of such an application until an opposition is actually filed.

It is not necessary for the paralegal specialist to notify the Board of the action taken on the amendment.

The Board will not suspend the potential opposer's time to file a notice of opposition in this situation. Id.

1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed

If the applicant files an amendment after a notice of opposition has been filed, the Board will act on the amendment under 37 C.F.R. §2.133. The Board has jurisdiction over any application in which an opposition has been filed. See TBMP §§514-514.04 for further information about amending an application during an opposition.